Iron Bow Technologies, LLC

Patent Trials and Appeals Board

Nov 9, 2020

2019004303 (P.T.A.B. Nov. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/439,168 02/22/2017 Peter Pistilli 86741.0008\US1 2753
29693 7590 11/09/2020
WILEY
1776 K STREET N.W.
WASHINGTON, DC 20006
EXAMINER
ZENATI, AMAL S
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
11/09/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptodocket@wiley.law
xsu@wiley.law
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER PISTILLI and
ANTHONY MINES

____________

Appeal 2019-004303
Application 15/439,168
Technology Center 2600
____________

BEFORE KEVIN F. TURNER, JAMES R. HUGHES, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final2 Rejection of claims 1–16, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Iron Bow
Technologies, LLC as the real party in interest. Appeal Br. 2.

2 Page 1 of the Office Action mailed February 8, 2018 does not identify the
Action as “Final” or “non-final.” However, Appellant and the Examiner
respectively refer to the Action as “final” and “Final.” See Appeal Br. 1;
Office Action 7.
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Application 15/439,168
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STATEMENT OF THE CASE
The invention relates to a telemedicine device, including an integrated
housing with a codec-independent hardware user interface. Abstract; Spec.
¶¶ 23, 10, 16, 26, 27, 42, and Figs. 1–3. Claim 1, reproduced below, is
illustrative of the subject matter on appeal (emphasis added):
1. A telemedicine device implemented in an integrated housing, the
telemedicine device comprising:
a display;
a plurality of input/output ports;
a videoconferencing codec;
a codec-independent hardware user interface; and
a processor configured:
to receive an input through the codec-independent
hardware user interface; and
to translate the received input into an instruction
understandable by the videoconferencing codec; and
to send the instruction to the videoconferencing codec.

Appeal Br. 13 (Claims Appendix).
REFERENCES
Prior art relied upon by the Examiner:
Name Reference Date
Mackre US 6,128,317 Oct. 3, 2000
Galindo et al. US 2011/0267418 A1 Nov. 3, 2003

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THE REJECTION
Claims 1–16 are rejected under 35 U.S.C. § 103 as being unpatentable
over Galindo and Mackre. Final Act. 2–6.
ANALYSIS
Appellant argues, inter alia, the Examiner errs by finding the
combination of Galindo and Mackre teaches the claim 1 limitation “[a]
telemedicine device implemented in an integrated housing” (also referred to
as “disputed limitation”). Appeal Br. 8–10; Reply Br. 4–5. In particular,
Appellant argues Galindo teaches separate elements that are interconnected
and distributed across multiple units, rather than contained in a single
“integrated housing.” Appeal Br. 8 (citing Galindo ¶ 66, Figs. 1–4).
Appellant argues the Examiner does not cite Mackre for teaching the
“integrated housing.” Id. at 9.
The Examiner finds Galindo teaches the disputed limitation of claim
1. Final Act. 2 (citing Galindo ¶¶ 62, 69, 71, 72, 76). The Examiner finds
Mackre teaches other limitations of claim 1. Id. at 3.
In the Answer, the Examiner determines the meaning of the term
“integrated housing” and finds that this meaning applies to the teachings of
Galindo. Ans. 3–4. The Examiner determines the definition of “integrated”
is “with various parts or aspects linked or coordinated.” Id. (citing Google
search for “integrated” definition). Id. at 3. The Examiner finds this
definition is consistent with the Examiner’s interpretation and the
Specification. Id. at 4. In particular, the Examiner refers to the
Specification:
For example, the original [S]pecification shows in [F]igures 1–5,
display 14, camera 20, input/output (I/O) ports 16, user interface 18,
the rear of housing 12 include a plurality of VESA-compliant
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mounting holes; I/O ports 16 can also include an interface, such as a
USB interface 16c, for the interconnection of peripherals (e.g., scopes
and other examination devices), power adapters, and the like ([see]
paragraphs: 0028, and 0029). Also the original [S]pecification states:
“A plurality of input/output devices, such as examination tools,
cameras, microphones, and speakers, can be coupled to the plurality
of input/output ports.” (paragraphs: 0018).

Id. at 4.
The Examiner then finds that Galindo teaches the claimed
“telemedicine device implemented in an integrated housing” because
Galindo teaches “a telemedicine system is provided which is capable of
being used for integrating multiple medical instruments and capable of
transmitting and receiving medical instrument data and real-time or time
delayed audio/video data to and from a corresponding telemedicine system
(emphasis added).” Id. at 4 (citing Galindo ¶ 413).
Appellant argues the telemedicine device of claim 1 includes “an
integrated housing” and the “recited elements” (e.g., the display,
input/output ports, codec, hardware user interface, and processor) that are
part of a single unit (e.g., they are contained by the claimed “integrated
housing”). Appeal Br. 8.
Appellant argues the Examiner admits Galindo and Mackre disclose
distributed interconnected elements and the Examiner incorrectly
characterize the claims contemplate “‘a telemedicine device 10 . . .
implemented in . . . a group of devices.’” Id. at 9 (citing Final Action 6;
Galindo ¶ 140, Figs. 1–4). Appellant argues the Examiner “reads language
into the claims that is not present and, for this reason alone, constitutes

3 The Examiner does not cite the source of this quote. However, it appears
the quote is taken from Galindo ¶ 41.
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reversible error.” Id. (citing Manual of Patent Examining Procedure
“MPEP” § 2111.01 (II)). Appellant argues the Examiner’s reference to a
Specification description that a camera and/or the input devices can be
coupled to the input/output ports does not support the Examiner’s assertion
that the claims are directed to “‘a group of devices.’” Id. (citing Final Act.
9). According to Appellant, claim 1 (and independent claim 10) do not
recite that the integrated housing incorporates the camera or any other
input/output device. Id. Therefore, Appellant argues “[i]n sum, neither
Galindo nor Mackre teaches the claimed housing that integrates the recited
elements” and “[t]o the contrary, the cited references teach that the recited
elements are implemented as separate and distinct devices — a fact that the
Examiner admits.” Id. at 9–10.
In the Reply Brief, Appellant reiterates and refers to the Specification
as consistent with Appellant’s interpretation and inconsistent with the
Examiner’s interpretation. Reply Br. 4–5. For example, Appellant argues
the Specification and Figures show:
the “integrated housing” is not a mere hub, but rather a single unit that
incorporates several recited elements (e.g., the display, input/output
ports, codec, hardware user interface, and processor). For instance,
“FIGS. 1–3 depict a telemedicine device 10, which is implemented in
an integrated housing 12. Housing 12 of telemedicine device 10
incorporates a display 14, a plurality of input/output ('1/0') ports 16, and
a user interface 18 implemented in hardware . . . .” Specification ¶
[0026]. The Examiner simply ignores this context.

Id. at 4.
As discussed below, we are persuaded by Appellant’s arguments.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
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would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court
states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citations omitted). However, the broadest reasonable
interpretation differs from the broadest possible interpretation. In re Smith
Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is ‘consistent with the specification.’” Id. at 1382–83 (quoting In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Here, the Examiner’s claim interpretation of “integrated housing” is
unreasonably broad. The Examiner’s interpretation utilizing “linked or
coordinated” focuses on the term “integrated” without regard to the context
of the claim. The disputed term is “integrated housing” and the telemedicine
device is implemented in the “integrated housing (emphasis added).” The
telemedicine device comprising (including) several identified devices (a
display, input/output ports, a video conferencing codec, a codec-independent
hardware user interface, and a processor; also referred to as “identified
devices”). One of ordinary skill in the art would understand the ordinary
meaning of the term “integrated housing” to constitute a unitary housing that
includes the claimed identified devices.
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Additionally, the Specification is consistent with this interpretation
and inconsistent with the Examiner’s proposed interpretation. The
Specification and Figures describe a unitary housing that includes the
claimed identified devices. Spec. ¶¶ 16, 26, 27; Figs. 1–3. For example:
Also disclosed herein is a telemedicine device including an
integrated housing. The integrated housing, in turn, includes: a
display; a plurality of input/output ports; a videoconferencing codec; a
codec-independent hardware user interface; and a processor
configured to translate user inputs received through the codec-
independent hardware user interface into instructions understandable
by the videoconferencing codec.

Spec. ¶ 16 (emphasis added).
Applying a broad and reasonable interpretation, Galindo’s distributed
group of interconnected devices does not constitute the claimed “integrated
housing.” On the record before us, the Examiner does not sufficiently show
that Galindo’s devices constitute the “integrated housing” or that one of
ordinary skill in the art would have modified the interconnected devices into
the claimed integrated housing.
In view of the above, we do not sustain the rejection of claim 1, and
independent claim 10 which includes the same disputed limitation discussed
supra. We also do not sustain the rejection of dependent claims 2–9 and 11–
16. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
Because our decision with regard to the disputed limitation is
dispositive of the rejections made, we do not address additional arguments
raised by Appellant.

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 103 Galindo, Mackre 1–16

REVERSED